Star Athletica, L.L.C. v. Varsity Brands, Inc.

Star Athletica v. Varsity Brands, decided March 22nd, 2017. By a vote of six to two, in an opinion by Justice Thomas, the Supreme Court affirmed the Sixth Circuit and set a single test for when a design feature of a useful article is eligible for copyright. A feature qualifies, the Court held, if it can be perceived as a work of art separate from the article, and would itself qualify as a protectable pictorial, graphic, or sculptural work. Here's the brief.

Varsity Brands designs, makes, and sells cheerleading uniforms. It holds more than two hundred copyright registrations for two-dimensional designs — combinations of lines, chevrons, and colorful shapes — appearing on the surface of those uniforms. Varsity sued Star Athletica, which also markets cheerleading uniforms, for infringing five of those designs.

The District Court granted Star Athletica summary judgment. It reasoned that the designs served the utilitarian function of identifying the garments as cheerleading uniforms, and so could not be separated, physically or conceptually, from that function.

The Sixth Circuit reversed. It held that the graphic designs were separately identifiable and capable of existing independently of the uniforms, because a design and a blank cheerleading uniform could appear side by side, and the designs could be applied to other garments or hung on a wall as art.

By the time the case reached the Court, the lower courts and commentators had produced a well-known tangle of competing separability tests. The Court granted certiorari to resolve that widespread disagreement over how to implement the statute.

The question was how to determine when an artistic feature of a useful article is separable, and therefore copyrightable, under Section 101.

Section 101 protects the design of a useful article only to the extent it incorporates artistic features that can be identified separately from, and are capable of existing independently of, the article's utilitarian aspects. A useful article, in turn, is one with an intrinsic utilitarian function beyond merely portraying appearance or conveying information.

The statute thus poses two requirements — separate identification and independent existence. Courts had long divided over whether separability could be merely conceptual or had to be physical, and over what role a designer's intent or a feature's marketability should play. The Court took the case to give Section 101 a single, text-based reading.

The Court announced a two-part test, drawn directly from the statutory text.

First, the separate-identification requirement: the decisionmaker must be able to look at the useful article and spot a two- or three-dimensional element that appears to have pictorial, graphic, or sculptural qualities. Second, the independent-existence requirement: that feature must be able to exist as its own work of art once imagined apart from the useful article. If it could not — if what remains is itself a useful article — it is not protectable.

Applying that test, the Court held that the surface decorations on Varsity's uniforms are separable. They can be identified as features having graphic qualities, and if separated and applied in another medium, they would qualify as two-dimensional works of art. That they would still trace the shape of a uniform was no bar; two-dimensional applied art, the Court reasoned, naturally correlates to the contours of the article it decorates.

The Court rejected the two limits Star Athletica urged. It abandoned the distinction between physical and conceptual separability.

And it declined to weigh the designer's intent or a feature's marketability, because neither is grounded in the statute's text.

Star Athletica supplied a single, statute-based test for separability, displacing the array of physical, conceptual, and multi-factor approaches the lower courts had developed. The rule turns on the extracted feature alone — not on what the useful article looks like without it, and not on the creator's purpose. The Court's holding was confined to eligibility. It expressly did not decide whether Varsity's particular designs were sufficiently original to be copyrighted, or whether any other prerequisite of a valid copyright was met.

Justice Ginsburg concurred only in the judgment, reasoning that no separability analysis was needed because the designs were themselves copyrightable works merely reproduced on the uniforms. Justice Breyer, joined by Justice Kennedy, dissented, arguing that the designs, once extracted, would still picture a cheerleading uniform — a useful article — and so could not exist independently.

Star Athletica v. Varsity Brands, 580 U.S. 405, decided March 22nd, 2017. I'm John Goodhue. Thanks for watching.